Trove Brands, LLC v. Cal. Innovations Inc.

OPINION AND ORDER

SARA L. ELLIS, United States District Judge

Plaintiff Trove Brands, LLC, d/b/a The BlenderBottle Company (“BlenderBottle”) sells drink dispensers that also allow for the combination of powders and liquids in the same container. According to BlenderBottle, California Innovations Inc. d/b/a Arctic Zone (“Arctic Zone”) sells a highly similar drink dispenser, confusing consumers into thinking they are purchasing BlenderBottle's product. In its first amended complaint (“FAC”), BlenderBottle brings federal claims against Arctic Zone for patent infringement under 35 U.S.C. § 271 (Count 1), trade dress infringement under 15 U.S.C. § 1125(a) (Count 2), and unfair competition and false designation of origin under 15 U.S.C. § 1125(a) (Count 3). BlenderBottle also brings state law claims for violation of the Illinois Uniform Deceptive Trade Practices Act (“UDTPA”), 815 Ill. Comp. Stat. 510/1 et seq. (Count 4), violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (“ICFA”), 815 Ill. Comp. Stat. 505/1 et seq. (Count 5), and unfair competition (Count 6). Arctic Zone has moved to dismiss the FAC pursuant to Federal Rule of Civil Procedure 12(b)(6). Because BlenderBottle has sufficiently pleaded its claims, however, the Court denies Arctic Zone's motion to dismiss.

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BACKGROUND^[1]

On April 30, 2002, the United States Patent and Trademark Office (“USPTO”) issued U.S. Patent No. 6, 379, 032 (the “'032 Patent”), titled “Flow-through Agitator.” The '032 Patent “relates to apparatus and methods for improved mixing of powder and liquid mixtures through the use of flow-through agitator apparatus, ” specifying as the preferred embodiment “a wireframe object with interstitial spaces which allow flow of liquids and powders into and out of the interior of the wire-frame object.” Doc. 23-1 at 2. BlenderBottle is the exclusive licensee of the '032 Patent and has all rights thereunder, including the right and standing to enforce the patent.

BlenderBottle produces and sells a container that allows a consumer to combine powders and liquids within it and also use it as a drink dispenser. These so-called shakers include a wire-framed object similar to the preferred embodiment discussed in the '032 Patent. Additionally, although shakers can come in many shapes and structures, BlenderBottle's shakers have a distinctive trade dress, consisting of “a tall cylindrical form; a top lid element with a tall shoulder; a recessed domed top from which a conical spout protrudes on one side and a pair of brackets on the opposing side; and the brackets host a pivoting arm containing a circular spout closure element” (the “Bottle Trade Dress”). Doc. 23 ¶ 12.

Consumers can find BlenderBottle's shakers in over ninety countries and 60, 000 retail locations, including Costco, Sam's Club, Target, Walmart, GNC, Amazon, Dick's Sporting Goods, and Vitamin Shoppe. BlenderBottle advertises widely, including through its website, social media, trade shows, flyers, and other advertisements. The media has highlighted

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BlenderBottle's shakers, and various celebrities have been photographed with BlenderBottle's shakers as well. The public has since come to recognize and identify shakers bearing the Bottle Trade Dress as high-quality products created by BlenderBottle, and BlenderBottle has derived significant revenue from their sale.

Arctic Zone has developed and sells shakers with a similar design to that of the BlenderBottle shaker. Arctic Zone sells these shakers, the AZ Pro Shaker Bottles, through major retailers in the United States, including Sam's Club. The FAC includes the following representative images of BlenderBottle and Arctic Zone shakers:

Image Omitted

Id. ¶ 44.

On January 15, 2020, BlenderBottle sent Arctic Zone a cease and desist letter demanding that Arctic Zone stop selling its shakers, which BlenderBottle maintained infringed at least claim 18 of the '032 Patent and the Bottle Trade Dress.^[2] BlenderBottle included representative images of both its and Arctic Zone's shakers in the letter. It also noted that “[a]ny further sales of the infringing products will constitute additional evidence of willful infringement.” Doc. 23-2 at 3.

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LEGAL STANDARD

A motion to dismiss under Rule 12(b)(6) challenges the sufficiency of the complaint, not its merits. Fed.R.Civ.P. 12(b)(6); Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990). In considering a Rule 12(b)(6) motion, the Court accepts as true all well-pleaded facts in the plaintiff's complaint and draws all reasonable inferences from those facts in the plaintiff's favor. Kubiak v. City of Chicago, 810 F.3d 476, 480-81 (7th Cir. 2016). To survive a Rule 12(b)(6) motion, the complaint must assert a facially plausible claim and provide fair notice to the defendant of the claim's basis. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007); Adams v. City of Indianapolis, 742 F.3d 720, 728-29 (7th Cir. 2014). A claim is facially plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678.

ANALYSIS

I. Trade Dress Claims (Counts 2 and 3)

BlenderBottle brings claims for trade dress infringement and unfair competition and false designation of origin in violation of 15 U.S.C. § 1125(a). Because the unfair competition and false designation of origin claim essentially seeks to hold Arctic Zone liable for trade dress infringement, the Court considers the claims together. See Weber-Stephen Prods. LLC v. Sears Holding Corp., No. 13-cv-01686, 2013 WL 5782433, at *1 n.2, 2 (N.D. Ill. Oct. 25, 2013) (“Weber's unfair competition claim really seeks to hold Sears liable for copying Weber's trade dress, meaning that the two claims are duplicative. Accordingly, the Court construes them as a single claim for trade dress infringement.”). To state a claim for trade dress infringement, BlenderBottle must allege (1) its trade dress is nonfunctional, (2) its trade dress has acquired

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secondary meaning, and (3) a likelihood of confusion exists between BlenderBottle's and Arctic Zone's trade dress. Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1015 (7th Cir. 2005). Arctic Zone argues that the FAC only includes conclusory allegations of each of these elements, and so the Court addresses the elements in turn.

1.Functionality

The FAC defines the Bottle Trade Dress as: “a tall cylindrical form; a top lid element with a tall shoulder; a recessed domed top from which a conical spout protrudes on one side and a pair of brackets on the opposing side; and the brackets host a pivoting arm containing a circular spout closure element.”^[3] Doc. 23 ¶ 12. Arctic Zone argues that BlenderBottle has defined the Bottle Trade Dress in only functional terms, meaning that it has failed to allege a basis for trade dress protection. A product is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)). A product also is functional “if it is a ‘competitive necessity,' that is, if its exclusive use ‘would put competitors at a significant non-reputation-related disadvantage.'” Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415, 419 (7th Cir. 2017) (quoting TrafFix Devices, 532 U.S. at 32-33).

In support of its argument, Arctic Zone relies on the USPTO's March 1, 2021 nonfinal office action that rejected a trademark application for BlenderBottle's bottle lid, which identified the following elements of the lid as functional: “the conical spout, the bracket or hinge element,

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the round base of the lid, and the recessed domed top.” Doc. 28-2 at 5. The USPTO examiner noted that these elements “are commonly used in goods of the type described in the application which reflects that there are few alternative designs available.” Id. But the Court does not find it appropriate to consider the USPTO's March 1, 2021 nonfinal office action at the pleading stage.^[4]Cf. Gen. Elec. Cap. Corp. v. Lease Res. Corp., 128 F.3d 1074, 1081 (7th Cir. 1997) (“A court may take judicial notice of an adjudicative fact that is both ‘not subject to reasonable dispute' and either 1) ‘generally known within the territorial jurisdiction of the trial court' or 2) ‘capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.'” (quoting Fed.R.Evid. 201(b))). Even were the Court to consider the nonfinal action, Arctic Zone has not provided any legal basis for the Court to find that the examiner's interim determination on functionality of a related, but not identical, combination of BlenderBottle's shakers' elements precludes BlenderBottle from demonstrating functionality here.

Instead, functionality is typically a question of fact, Ga.-Pac. Consumer Prods. LP v. Kimberly-Clark Corp., 647 F.3d 723, 727 (7th Cir. 2011), and inappropriate for resolution at the pleadings stage, Toyo Tire & Rubber Co. v. Atturo Tire Corp., No. 14 CV 00206, 2015 WL 13913257, at *3 (N.D. Ill. Mar. 13, 2015). BlenderBottle contends that it has sufficiently pleaded nonfunctionality because it has highlighted existing alternative designs for shakers in the FAC and alleged that the Bottle Trade Dress resulted from decisions about ornamentation, does not involve a comparatively simple and inexpensive manufacturing method, and does not

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provide a utilitarian advantage. While...